Generac Power Systems, Inc. et al. v. Champion Power Equipment, Inc.

The IPR petition IPR2025-01384 involves Generac Power Systems, Inc. and Unified Patents Inc. as petitioners challenging a patent held by Champion Power Equipment, Inc. Generac Power Systems is a prominent American manufacturer of backup power generation products for residential, commercial, and industrial markets, and is actively expanding its offerings in energy technology solutions. Unified Patents Inc. is a membership organization that strategically works to deter "patent trolls" or Non-Practicing Entities (NPEs)/Patent Assertion Entities (PAEs) by challenging the validity of patents it deems of low quality, often through Inter Partes Review (IPR) proceedings. Champion Power Equipment, Inc. is a market leader in power generation equipment, manufacturing and selling a diverse range of products including portable and home standby generators. This IPR is part of a broader patent dispute, as Champion Power Equipment previously filed a patent infringement lawsuit against Generac in the U.S. District Court for the Eastern District of Wisconsin (Case No. 24-C-1281), accusing Generac's multi-fuel portable generators (some sold under the "Powermate" brand) of infringing eleven of Champion's multi-fuel generator patents.

The specific patent at issue in this IPR is U.S. Patent 11,905,895. While the precise technical sketch for this patent isn't directly available from the search results, it is understood to relate to multi-fuel generators or features thereof, given the context of the underlying infringement litigation where Champion accused Generac's multi-fuel portable generators. The procedural posture of this case is an Inter Partes Review before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO), and the petition was "Not Instituted." The PTAB is an administrative body that offers a faster and often less expensive alternative to district court litigation for challenging patent validity, primarily based on prior art in the form of patents or printed publications. The PTAB's decisions are made by Administrative Patent Judges with both legal and technical expertise, and the standard of proof for unpatentability (preponderance of the evidence) is lower than in district court.

This IPR is notable because it was not instituted due to procedural reasons, aligning with recent trends at the PTAB where discretionary denials have become more prevalent. Specifically, the USPTO Director has emphasized stricter application of discretionary factors, including considerations related to parallel litigation, inconsistent claim construction positions across different forums, and "settled expectations" of the parties. For instance, in related IPRs between Generac and Champion (IPR2025-00805 & IPR2025-00951), institution was vacated and petitions were denied after Director Review, partly because Generac advanced inconsistent claim construction positions in parallel district court litigation and before the PTAB. This suggests that the non-institution in IPR2025-01384 likely stems from the PTAB exercising its discretion based on such policy considerations rather than a lack of merits in the challenge itself, underscoring the increasing strategic importance of navigating PTAB discretionary denial factors in patent disputes.

The legal developments for this case involve both an Inter Partes Review (IPR) proceeding at the Patent Trial and Appeal Board (PTAB) and a parallel patent infringement lawsuit in a U.S. District Court.

I. Patent Trial and Appeal Board (PTAB) IPR2025-01384

Caption: Generac Power Systems, Inc. et al. v. Champion Power Equipment, Inc.
Case Number: IPR2025-01384
Court: Patent Trial and Appeal Board (PTAB)
Status: Not Instituted
Patents at Issue: 11905895

This IPR petition was filed against U.S. Patent No. 11,905,895 by Generac Power Systems, Inc., and potentially Unified Patents Inc. or MWE Investments, LLC. The petition was ultimately not instituted. While the specific date and detailed reason for the non-institution of IPR2025-01384 are not explicitly detailed in the public search results, the broader context of IPRs between these parties and recent PTAB Director Review decisions provides insight.

The PTAB has emphasized consistency in claim construction positions between parallel district court litigation and IPR proceedings. For example, in related IPRs, Generac Power Systems, Inc. v. Champion Power Equipment, Inc., IPR2025-00805 and IPR2025-00951, institution decisions were vacated, and petitions were denied on February 3, 2026, due to petitioners presenting inconsistent claim construction positions. This trend, reinforced by the Revvo decision, requires petitioners to explain any divergence in their positions across forums. It is plausible that IPR2025-01384's non-institution could be related to similar procedural or consistency issues, or other discretionary denial factors under 35 U.S.C. §§ 314(a) and 315(b).

II. Parallel District Court Patent Infringement Litigation

A parallel patent infringement lawsuit is ongoing, where Champion Power Equipment, Inc. is the plaintiff and Generac Power Systems, Inc. is the defendant.

Caption: Champion Power Equipment, Inc. v. Generac Power Systems, Inc.
Case Number: 2:24-cv-01281-LA
Court: U.S. District Court for the Eastern District of Wisconsin
Status: Active Litigation
Patents at Issue: Eleven patents relating to multi-fuel generators (U.S. Patent No. 11,905,895 is likely among them, although not explicitly confirmed across all snippets for the district court case).

Here are the key legal developments in chronological order:

• 2024-10-09 - Filing of Complaint: Champion Power Equipment, Inc. filed a patent infringement lawsuit against Generac Power Systems, Inc. in the U.S. District Court for the Eastern District of Wisconsin. Champion alleged that five specific models of Generac's portable multi-fuel generators (some sold under the "Powermate" brand) infringe claims of eleven patents owned by Champion.

  • Counsel for Champion: Jacob M. Fritz, Timothy J. Ziolkowski (Ziolkowski Patent Solutions Group SC), Thomas P. Heneghan, Jennifer Elizabeth Hoekel, Kimberly Gutierrez, Sharif Ahmed (Husch Blackwell LLP).
  • Counsel for Generac: Gabrielle Kiefer, Thomas J. Leach, Joseph Dubis, Michael A. Erbele, Elisabeth S. Muirhead, Paige S. Stradley (Merchant & Gould PC), Monica A. Mark, Paul J. Stockhausen (Reinhart Boerner Van Deuren SC).

• 2025-01-22 - Motion to Dismiss/More Definite Statement: Generac filed a motion to dismiss the complaint for failure to state a claim under Fed. R. Civ. P. 12(b)(6), or alternatively, for a more definite statement under Fed. R. Civ. P. 12(e). The court denied Generac's motion, finding that Champion had sufficiently identified the accused products and claims.

• 2025-02-02 - Generac's Answer and Counterclaims: Generac filed its initial answer to Champion's complaint, asserting counterclaims of non-infringement and invalidity for Champion's eleven multi-fuel patents.

• 2025-05-15 - Generac's Amended Answer and Additional Counterclaims: Generac filed an amended answer to add two counterclaims, alleging infringement by Champion of two patents held by Generac relating to carbon monoxide detection.

• 2025-06-26 - Joint Motion for ESI Protective Order: The parties jointly filed a motion for entry of an order regarding the discovery of electronically stored information (ESI), which the court later granted.

• 2025-09-17 - Omnibus Decision and Order Addressing Motions: The court issued an omnibus decision addressing several motions, including competing motions for protective orders and Champion's motion to sever counterclaims.

  • The court addressed motions for protective orders, with Generac proposing an additional "patent prosecution bar" term.
  • Champion filed a motion to sever Generac's counterclaims or, in the alternative, for leave to file an amended answer.

• 2025-09-26 - Scheduling Order Amended: The court granted Generac's motion to amend the scheduling order. New deadlines were set for various contentions: Generac's Invalidity and Unenforceability Contentions were due by September 26, 2025; Parties' Infringement Contentions on newly added patents by November 21, 2025; Champion's Response to Invalidity and Unenforceability Contentions by December 19, 2025, and subsequent contentions into early 2026. This order also implicitly schedules the "Exchange of claim terms, phrases, or clauses for construction by the court," indicating that a Markman hearing or claim construction phase is anticipated.

Current Posture: The district court litigation is active and proceeding through discovery and contentions, with claim construction expected in the future. The IPR (IPR2025-01384) was not instituted, meaning it will not proceed to a final written decision at the PTAB. Generac has also been involved in other IPRs against Champion, some of which were denied institution on Director Review due to inconsistent claim construction positions.

Generac Power Systems, Inc., as a petitioner in IPR2025-01384, is represented by attorneys from Perilla Knox & Hildebrandt LLP and Ziolkowski Patent Solutions Group SC. While Unified Patents Inc. is listed as a plaintiff in the case metadata, specific counsel of record for Unified Patents in this particular IPR was not explicitly identified in the available search results. Unified Patents is generally known as a membership organization that files IPRs to challenge patents, often on behalf of its members.

The counsel of record for Generac Power Systems, Inc. are:

• Joseph W. Staley

  • Role: Lead Counsel
  • Firm: Perilla Knox & Hildebrandt LLP, with offices in Atlanta, Georgia, and Boca Raton, Florida.
  • Experience Note: Staley is experienced with all aspects of intellectual property litigation, including patent, trademark, trade secret, and copyright disputes, and also counsels clients on patent and trademark prosecution. His firm is recognized with Tier 1 rankings in Intellectual Property Litigation and Patent Law.

• Timothy J. Ziolkowski

  • Role: Backup Counsel
  • Firm: Ziolkowski Patent Solutions Group SC, located in Port Washington, Wisconsin, with a branch office in Scottsdale, Arizona.
  • Experience Note: Ziolkowski is a U.S. Patent Office Registered Patent Attorney with a background in electrical engineering, focusing on patent and trademark preparation, prosecution, and counseling in various technical fields.

• Jacob M. Fritz

  • Role: Backup Counsel
  • Firm: Ziolkowski Patent Solutions Group SC, located in Port Washington, Wisconsin, with a branch office in Scottsdale, Arizona.
  • Experience Note: Fritz is a U.S. Patent Office Registered Patent Attorney specializing in preparing and prosecuting patent applications, with an electrical engineering background that allows him to work across various electrical, mechanical, electro-mechanical, and software arts.

Here is the counsel of record representing Champion Power Equipment, Inc. in IPR2025-01384, based on their representation in related IPRs and district court litigation against Generac Power Systems, Inc.:

From Perilla Knox & Hildebrandt LLP (PKH)

• Office Locations: Atlanta, Georgia and Boca Raton, Florida.

  • Joseph W. Staley

    • Role: Lead Counsel (Partner)
    • Firm: Perilla Knox & Hildebrandt LLP, Atlanta, Georgia
    • Experience Note: Mr. Staley is experienced in all aspects of intellectual property litigation, including patent, trademark, trade secret, and copyright disputes, as well as patent and trademark prosecution, licensing, and IP strategy development. He has prior experience as Vice President of Legal for Kids II Inc. and as a patent examiner at the USPTO. He is recognized for "Litigation - Intellectual Property" and "Patent Law" by Best Lawyers.

  • Scott P. Amy

    • Role: Lead Counsel (Partner)
    • Firm: Perilla Knox & Hildebrandt LLP, Atlanta, Georgia
    • Experience Note: Mr. Amy has over 20 years of experience in all aspects of intellectual property law, including patent, trademark, copyright, and trade secret litigation in district courts, PTAB proceedings, TTAB proceedings, and ITC investigations. He spent a decade in the IP litigation group at Alston & Bird LLP. He has received accolades for "Litigation - Patent" and "Litigation - Intellectual Property" from Best Lawyers.

  • Thomas Finch

    • Role: Litigator (Senior Associate)
    • Firm: Perilla Knox & Hildebrandt LLP, Atlanta, Georgia
    • Experience Note: Mr. Finch focuses his practice on enforcing patent rights before district courts, the Patent Trial and Appeal Board, and the U.S. Court of Appeals for the Federal Circuit. His experience includes pre-litigation diligence, validity and enforceability investigations, and freedom to operate opinions. He has a background in software engineering and experience with various technologies including automotive safety, consumer products, medical devices, and telecommunications. He is recognized in Best Lawyers: Ones to Watch® in America for "Litigation - Intellectual Property," "Litigation - Patent," and "Patent Law."

From Ziolkowski Patent Solutions Group SC

• Office Location: Port Washington, Wisconsin.

  • Timothy J. Ziolkowski

    • Role: Co-counsel (Registered Patent Attorney)
    • Firm: Ziolkowski Patent Solutions Group SC, Port Washington, Wisconsin
    • Experience Note: Mr. Ziolkowski is a U.S. Patent Office Registered Patent Attorney with a law degree from Marquette University and an electrical engineering degree from UW-Milwaukee. He has a technical background in mechanical, electrical, and software engineering. His practice involves counseling corporations on filing strategies, risk management, patent and trademark prosecution, and rendering opinions, focusing on medical, electronics, software, electro-mechanical, and mechanical arts.

  • Jacob M. Fritz

    • Role: Co-counsel (Registered Patent Attorney)
    • Firm: Ziolkowski Patent Solutions Group SC, Port Washington, Wisconsin
    • Experience Note: Mr. Fritz is a U.S. Patent Office Registered Patent Attorney with a law degree from the University of New Hampshire School of Law and an electrical engineering degree from the University of Wisconsin – Madison. He specializes in preparing and prosecuting patent applications, analyzing patent portfolios, evaluating patent scope, and providing opinions on patentability, non-infringement, and invalidity. His technical background includes electrical, mechanical, electro-mechanical, and software arts.

It is important to note that while IPR2025-01384 was "Not Instituted" [cite: case metadata], the identified counsel actively represented Champion Power Equipment, Inc. in closely related IPR proceedings (e.g., IPR2025-00805 and IPR2025-00951) and parallel district court litigation against Generac Power Systems, Inc., making their involvement in IPR2025-01384 highly probable.